Ex Parte Chu et al

Patent Trial and Appeal Board

Feb 7, 2013

11499701 (P.T.A.B. Feb. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHANG-NAM CHU, JONG-IL CHOI,
DO-GYOON KIM, YOUNG-SUP KIM, and
HYO-SUNG JUNG
____________________

Appeal 2011-011442
Application 11/499,701
Technology Center 2100
____________________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/499,701

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
19 and 22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to method and apparatus for directly writing
multimedia data on a digital device. Claim 1, reproduced below, is
representative of the claimed subject matter:
1. A method for writing multimedia data, the method
comprising:

sensing multimedia data written on a storage medium;

displaying a user interface screen to show the multimedia
data and a folder corresponding to a digital device;

receiving a command to write the multimedia data in the
folder corresponding to the digital device;

determining, in response to receiving the command and
without additional input from a user, a format which is playable
in the digital device by using metadata, corresponding to the
multimedia data, received from a server; and

automatically converting, in response to determining the
format and without additional input from the user, the
multimedia data to the format which is playable by the digital
device and writing the converted multimedia data to the digital
device.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Application 11/499,701

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Bowman-Amuah US 6,339,832 B1 Jan. 15, 2002
Hirano
Hanson
US 2004/0210593 A1
US 2005/0125082 A1
Oct. 21, 2004
Jun. 9, 2005

REJECTIONS
Claims 1-19 and 22 stand rejected under 35 U.S.C §112 first
paragraph as failing to comply with the written description requirement.
Claims 1-19 and 22 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Hanson, Hirano, and Bowman-Amuah (hereinafter
“Bowman”).

ANALYSIS

35 U.S.C. §112, FIRST PARAGRAPH, WRITTEN DESCRIPTION

Appellants' maintain that the features of the claimed invention are
described and supported in Appellants' disclosure. (App. Br. 11). The
Examiner maintains that claims 1-19 and 22 fail to comply with the written
description requirement with respect to:
determining, in response to receiving the command and
without additional input from a user, a format which is playable
in the digital device by using metadata, corresponding to the
multimedia data, received from a server; and
automatically converting, in response to determining the
format and without additional input from the user, the
multimedia data to the format which is playable by the digital
device and writing the converted multimedia data to the digital
device.

(Claim 1; Ans. 3-4). The Examiner also maintains that:

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The specification needs to say how the multimedia metadata are
used to determine the format. To say that the format is
determined using multimedia metadata, as the specification
does in paragraphs [27] and [28], pages 7 and 8 and paragraph
[36], pages 10 and 11, does not say how it is used to determine
the format. The closest that the specification appears to come to
this limitation is when "tag information according to a format
(e.g., MP3 or WMA) for multimedia data able to be played in a
digital device is also written in the folder for the digital device
300" in lines 6-9, paragraph [36], pages 10 and 11. There is no
mention in the specification, however, of this tag information
being used to determine the format, not to speak of how one
would use the tag information to determine the format. In fact,
in lines 1-3, paragraph [37], page 11, by dropping the file into a
particular folder, it is the user, and not the methods of claims 1
or 22, the converting and writing unit of claim 10 or the
executable program of claim 19, that determines the format.

(Ans. 4). We agree with the Examiner that the Specification does not
describe how the multimedia metadata are used to determine the
format so as to evidence possession. Appellants identify paragraphs
[28], [36], [37], and [40] along with figure 3 to describe and support
possession of this feature at the time of filing. From our review of
these identified portions, we do not find express written description
support or clear implicit written description support to evidence
possession at the time of filing. We find the identified portions of
Appellants' Specification merely disclose that the data is converted to
a format that is playable by the digital device without identifying how
this is done, with or without user interaction.
We note that paragraph [40] states "it is possible for a user to write a
multimedia file on a digital device by one operation, without having to set
options when the multimedia file is converted to a format playable in a
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digital device." Yet, this may be no more than merely presetting the
conversion and looking up the format rather than performing some
"determination" step. Therefore, Appellants have not shown error in the
Examiner's finding of a lack of written description support for the claimed
subject matter, and we will sustain the rejection of claims 1-19 and 22.
Appellants' Reply Brief contains similar arguments and contends there
is no requirement that a negative limitation be expressly mentioned in the
Specification for the claims to comply with written description requirement.
(Reply Br. 4-5). We disagree with Appellants and note that more than mere
silence is required. Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d
1344, 1351 (Fed. Cir. 2012). ("Negative claim limitations are adequately
supported when the specification describes a reason to exclude the relevant
limitation. Such written description support need not rise to the level of
disclaimer. In fact, it is possible for the patentee to support both the
inclusion and exclusion of the same material.") Appellants have not
identified any reason to exclude the identified limitation. Therefore,
Appellants' have not shown error in the Examiner's finding of a lack of
written description support for the claimed subject matter, and we will
sustain the rejection of claims 1-19 and 22.

35 U.S.C. §103

With respect to independent claims 1, 10, 19, and 22, Appellants rely
upon the same argument. (App. Br. 13-18). Therefore, we select
independent claim 1 as the representative claim and address Appellants'
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arguments thereto. Dependent claims 2-9 and 11-18 stand or fall with their
parent claims by virtue of their dependency. (App. Br. 19).

Appellants maintain that the Hanson reference does not teach the
claimed limitation:
receiving a command to write the multimedia data in the
folder corresponding to the digital device, [and]
determining, in response to receiving the command and
without additional input from a user, a format which is playable
in the digital device by using metadata, corresponding to the
multimedia data, received from a server.

(Claim 1; App. Br. 13). Appellants maintain that Hirano does not cure the
deficiencies of Hanson because, similar to Hanson's "auto rip CD function,"
Hirano is directed to a data recording apparatus that records data of a CD on
a hard disk drive (HDD). (App. Br. 15). Appellants' contentions with
respect to Hanson and Hirano are with respect to what the end-use/playable
device, identified in these references as a hard disk drive, rather than the
mobile unit as relied on by the Examiner in the Bowman reference. We find
Appellants' arguments with respect to the HDD as the end-use/playable
digital device unavailing. We find Appellants' arguments to the hard disk
drive, where the playback device would be the actual digital device, of
concern to skilled artisans (whatever digital device may be desired). We
find skilled artisans would clearly realize that the data format for the
ultimate playback device is of concern. We find the teachings of Hanson
with respect to auto ripping, selection of an audio file format to be used, auto
detect function, and the use of metadata and auto-detection/collection of
metadata clearly teaches and suggests the steps of the claimed invention.
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(Hanson [0032]-[0035]). Furthermore, we find the sequence of various steps
does not significantly impact the process of transforming data in one format
to data in another format for subsequent playback.
As discussed above, with respect to the rejection under 35 U.S.C.
§112, first paragraph, the system could have a preset format (input by a user
prior to any file selection) which is looked up to convert the files to this
format. Then, the process of Hanson would teach the claimed negative
limitation "determining, in response to receiving the command and without
additional input from a user."
Furthermore, we find that the steps recited in independent claim 1 are
the same steps as identified by Appellants in the Background of the
Invention [02]-[05] with the addition of the negative limitation. We find that
in the prior art, the user would have to determine the playable format for the
digital device. We observe the language of independent claim 1 merely sets
forth "in response to receiving the command and without additional input
from a user" and "automatically converting, in response to determining the
format and without additional input from the user." We conclude that the
mere automation of the manual determination does not distinguish the
claimed invention. In re Venner, 262 F.2d 91, 95 (CCPA 1958) (holding
that broadly providing an automatic or mechanical means to replace a
manual activity which accomplished the same result is not sufficient to
distinguish over the prior art.); cf. Leapfrog Enter., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (replacing prior art mechanical device
with modern electronics held obvious).
Addressing Bowman, Appellants contend that Bowman is not
analogous prior art with respect to the claims of the instant application.
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(App. Br. 16-18). While we agree with Appellants that Bowman is directed
to a wide spectrum of applications when compared to Hanson and the
Hirano, we find that Bowman is directed to a wide spectrum of multimedia
information which includes audio data, specifically music data (Bowman
col. 62) as discussed throughout the reference (Ans. 9-10). We agree with
the Examiner that Bowman further teaches the conversion/translation of
these data types to the proper format requires recognizing the initial format.
(Ans. 9-10). Therefore, we find Appellants' combinability argument to be
unpersuasive of error in the Examiner's conclusion of obviousness.
Appellants present similar arguments in the Reply Brief and contend
that the Examiner is overlooking differences in structure and function
between the present application and the prior art teachings of the Bowman
reference. (Reply Br. 7-9). As discussed above, we find this argument
unavailing and does not show error in the Examiner's combination.
Therefore, Appellants have not shown error in the Examiner's conclusion of
obviousness for the claimed subject matter, and we will sustain the rejection
of representative independent claim 1 and claims 2-19 and 22 grouped
therewith.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-19 and 22 under 35
U.S.C § 112 first paragraph as failing to comply with the written description
requirement.
The Examiner did not err in rejecting claims 1-19 and 22 under 35
U.S.C § 103(a) as being unpatentable over Hanson, Hirano, and Bowman.
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DECISION
For the above reasons, the Examiner’s rejections of claims 1-19 and
22 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2012).

AFFIRMED

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